Loggerhead Tools, LLC v. Sears Holdings Corporation

Filing 456

MOTION by Defendants Apex Tool Group, LLC, Sears Holdings Corporation, Counter Claimants Apex Tool Group, LLC, Sears Holdings Corporation for judgment as a Matter of Law (Attachments: # 1 Table of Appendices, # 2 Appendix 1, # 3 Appe ndix 2-1, # 4 Appendix 2-2, # 5 Appendix 2-3, # 6 Appendix 2-4, # 7 Appendix 2-5, # 8 Appendix 2-6, # 9 Appendix 2-7, # 10 Appendix 2-8, # 11 Appendix 2-9, # 12 Appendix 2-10, # 13 Appendix 3 - PTX 1, # 14 Appendix 3 - PTX 3, # 15 Appendix 3 - PTX 4, # 16 Appendix 3 - PTX 51, # 17 Appendix 3 - PTX 119, # 18 Appendix 3 - PTX 157, # 19 Appendix 3 - PTX 175, # 20 Appendix 3 - PTX 467, # 21 Appendix 3 - PTX 503, # 22 Appendix 4 - DTX 1, # 23 Appendix 4 - DTX 2 , # 24 Appendix 4 - DTX 3, # 25 Appendix 4 - DTX 5, # 26 Appendix 4 - DTX 7, # 27 Appendix 4 - DTX 8R, # 28 Appendix 4 - DTX 9, # 29 Appendix 4 - DTX 9R, # 30 Appendix 4 - DTX 11, # 31 Appendix 4 - DTX 11R, # 32 Appendix 4 - DTX 23, # 33 Appendix 4 - DTX 24, # 34 Appendix 4 - DTX 74, # 35 Appendix 4 - DTX 75, # 36 Appendix 4 - DTX 212, # 37 Appendix 4 - DTX 213, # 38 Appendix 5)(Sernel, Marcus)

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APPENDIX 1 520 Cagan - Direct by Skiermont 1 you've just made? 2 A I have. 3 Q And can you describe for the jury what is on the left and 4 right side of Cagan 82? 5 A 6 On the right is the Max Axess wrench. 7 first elements are in blue, the second elements in orange. Yes. And you can see the Now, one of the things you'll note is that, first of 8 9 So on the left is the patent, the Loggerhead patent. all, the order of the plates is different. Secondly, you'll 10 note that there's two second elements that are visible or shown 11 for the Max Axess, but only one shown in this particular 12 embodiment of the '470 patent. And it doesn't matter. 13 They still meet the require -- 14 Max Axess still meets every requirement of claim 1. As a 15 matter of fact, that first -- sorry, that second element of the 16 four of the different Loggerhead patents could be made with two 17 pieces. 18 Q 19 them what you're talking about. 20 mean, I'm sorry, the second -- 21 A Second. 22 Q -- element of the figure in the patent. 23 A Hopefully this will work -- oh, it does, okay. 24 particular figure -- 25 Q If you don't mind clicking to the next slide, please. Yes, would you, using your red -- press the screen to show Go ahead. The first element of -- I So this 521 Cagan - Direct by Skiermont 1 A And so there's no reason why that can't be, for example, 2 made of two pieces. 3 button, you'll see that. If you don't mind clicking the next And as a matter of fact, if you look at your 4 5 Loggerhead Bionic wrench, which is an instantiation of the 6 patent, it's made with two panels, two pieces. 7 Q 8 you were noting that the Bionic Wrench -- the Bionic Wrench's 9 orange second element is, in fact, a two-piece assembly? 10 A And what you were indicating there to the jury, Dr. Cagan, That's correct. Now, if you can -- I'd like to -- but if -- again, in 11 12 terms of the overall functioning and the requirements of the 13 claims that we've looked at, you'll see that they are the same. 14 And as a matter of fact, if you can -- you're about to 15 see what will happen is we'll bring -- bringing these two 16 elements back together where we were and then again you'll 17 watch both of these tools function if you don't mind, please, 18 sir. So they come together again so that's where we were. 19 20 Now everything's assembled. And as the elements are -- as the 21 elements are brought together, the crimping elements actually. 22 Q 23 Wrench. 24 Is that right, Dr. Cagan? 25 A And on the left hand, there is the depiction of the Bionic And on the right hand is the Max Axess Locking Wrench. Well, the one on the left is the different Loggerhead 528 Cagan - Cross by Sernel 1 A Up to down -- yes, except it would have the body portion 2 which you're about to show. 3 some depth to it obviously. 4 Q 5 the bottom of the screen of the Bionic Wrench gripping element, 6 correct? 7 A Correct. 8 Q And then the two things sticking up, those are the arm 9 portions in the Bionic Wrench gripping element, correct? Below, I assume, needs to have So the body portion is the portion here on the bottom -- 10 A Correct. 11 Q Now -- 12 A Can I just see it first? 13 Q I'm going to show the jury, then I'll bring it to you. 14 A Okay. 15 Q This is what we're going to put on the screen. 16 this is the gripping element in the Max Axess Locking Wrench 17 product. I believe (Object tendered to the witness.) 18 THE WITNESS: 19 That's correct. 20 BY MR. SERNEL: 21 Q 22 the force transfer element's been removed, correct? 23 A Correct. 24 Q But the reason why we're here is you say that this block 25 has both a body portion and an arm portion, correct? And again, we had nothing poking through the holes here, so That's 529 Cagan - Cross by Sernel 1 your opinion? 2 A MR. SERNEL: 3 4 It is. I'd like to, if possible, your Honor, could I just hand the little -- the parts -- 5 THE COURT: 6 MR. SERNEL: 7 THE COURT: -- to the jury? Sure. (Objects published to the jury.) 8 9 Sure. BY MR. SERNEL: 10 Q Let's talk a little bit about your work as an expert. 11 A Okay. 12 Q I think I heard during direct that your typical hourly rate 13 for your expert work is $400 an hour, correct? 14 A Correct. 15 Q That's what you're being paid for, for your testimony and 16 all the work that you've done in this case, correct? 17 A My time, correct. 18 Q Now, this isn't the first time you've done expert work in 19 litigation, correct? 20 A Correct. 21 Q You've done it for a variety of different clients in a 22 variety of different subject matter, correct? 23 A A few. 24 Q One of the subject matters on which you've offered expert 25 testimony in a prior patent case is on an automatic cow milking 553 Cagan - Cross by Sernel 1 For right now, you can leave it. MS. TINKHAM: 2 3 Your Honor, plaintiff Loggerhead now calls Mr. Barry Pope by video deposition. THE COURT: 4 All right. We'll get started with that. 5 Ladies and gentlemen, once again, a video deposition is for you 6 to consider just as you would any other evidence. 7 All right. 8 MS. TINKHAM: 9 10 13 45 minutes. THE COURT: We'll do about 15 minutes, and then we'll give the jurors a break and then finish. (Video recording played in open court.) MR. SKIERMONT: 14 15 By way of background, Mr. Pope is the former manager of Craftsman hand tools and the video is about 11 12 So I need to switch the computer, correct? Is this a good time for a break, your Honor? 16 THE COURT: 17 Ladies and gentlemen, we'll take a short recess. 18 19 Yeah, let's take a break. (Recess at 2:40 p.m., until 2:55 p.m.) THE COURT: All right. You may be seated. 20 continue further with the video deposition. 21 We'll (Video recording played in open court.) 22 MS. TINKHAM: Loggerhead would like to move Mr. Pope's 23 exhibits into testimony. 24 end of the day so as not to -- 25 THE COURT: I have a list that we can do at the We can do that at the end of the day, 554 1 that's fine. MS. TINKHAM: 2 The next witness is Jill Lowe, and her 3 video is going to take about 40 minutes. 4 one more video to play. After that, we have It's about an hour. 5 So if you want to let us know what time we should cut 6 that off because that will put us, I think, over 5:00 o'clock. THE COURT: 7 It will go past 5:00 o'clock. All right. 8 Well, why don't we get started with the next video and once 9 again take a break in the middle, maybe after 10, 15 minutes. MS. TINKHAM: 10 11 And Ms. Lowe is vice president of national retail accounts at Apex Tools. THE COURT: 12 13 Okay. Okay, great. Thank you. (Video recording played in open court.) THE COURT: 14 We'll take a short break. And we will 15 finish this deposition today and then get started on the next 16 one. 17 18 19 20 21 22 23 24 25 We won't finish that last one today. (Recess at 3:44 p.m. until 4:00 p.m.) 1063 Owen - Redirect by Hayes 1 words, that the Buchanan plunger of a block with a pin through 2 it doesn't have an arm portion. 3 Q 4 is that related to the Max Axess gripping element in this case? 5 A 6 plunger, is a basic block with a pin through it. 7 are very similar in that regard. 8 language, they're both essentially blocks with pins through 9 them. We've been talking a lot about the Buchanan plunger. How Well, the Max Axess gripping element, like the Buchanan So the two Relevant to the claim 10 Q If we can turn to the next page, Loggerhead 1836. 11 And if we could pull up the first full paragraph there. Again, I want to call your attention to the first two 12 13 sentences and then the last sentence. 14 this portion affected your design guidance in this case, Mr. 15 Owen. 16 A 17 Loggerhead is saying specifically Buchanan's gripping element 18 does not contain an arm portion, and instead that the force 19 transfer element is directly attached to the body. 20 they also say that Buchanan does not teach or suggest an arm 21 portion. 22 Certainly. I took a look at this. If you could explain how This is where And then So if Buchanan's approach of a block with a pin 23 through it doesn't have an arm portion, then from a design 24 guidance standpoint, a design that uses a block with a -- a 25 simple block with a pin -- a pin through it, much like 1064 Owen - Redirect by Hayes 1 Buchanan, then that shouldn't be within the scope of their 2 claims either. 3 Q 4 for its gripping element in this case? 5 A And what design does the Max Axess Locking Wrench utilize It uses a simple block with a pin through it. 6 MR. HAYES: Thank you. No more questions, your Honor. 7 THE COURT: All right. Recross-examination. 8 MS. SPENCER: 9 THE COURT: 10 11 No, your Honor. Ladies and gentlemen of the jury, do any of you have any questions for this witness? (No response.) 12 THE COURT: 13 THE WITNESS: 14 THE COURT: All right. 15 MR. HAYES: Your Honor, defendants call Professor 16 17 18 Mr. Owen, you may step down. Thank you. The defendants' next witness. Frank Fronczak. THE COURT: right there. Thank you. You can just leave that stuff Thank you. 19 And it's Professor Fronczak? 20 THE WITNESS: 21 THE COURT: 22 THE WITNESS: 23 THE COURT: 24 THE WITNESS: 25 Pardon? It's Professor Fronczak? Yes. Yes, ma'am. Can I ask you to raise your right hand. I'm sorry, yes, your Honor. (Witness duly sworn and takes the stand.) 1065 Fronczak - Direct by Hayes 1 THE COURT: You may be seated. 2 MR. HAYES: Your Honor, may I approach? 3 THE COURT: You may. (Exhibits tendered to the witness.) 4 5 THE WITNESS: Thank you. 6 MR. HAYES: May I proceed, your Honor? 7 THE COURT: You may. 8 FRANK FRONCZAK, DEFENDANTS' WITNESS, SWORN 9 DIRECT EXAMINATION 10 BY MR. HAYES: 11 Q 12 jury. 13 A Good afternoon. 14 Q Professor Fronczak. 15 A Sure. 16 Q Professor Fronczak, what is your role in this case? 17 A I'm a technical expert in the case. 18 Q And as a technical expert in this case, did you provide 19 opinions? 20 A Yes, I did. 21 Q Before we get into your opinions, I'd like to talk a little 22 bit about your background. 23 A Sure. 24 Q On opening, Mr. Skiermont, I think, inadvertently said that 25 you're from Michigan. Good afternoon. Could you please introduce yourself to the I'm Frank Fronczak. Is that okay? 1066 Fronczak - Direct by Hayes Professor Fronczak, where were you born and raised? 1 2 A I was born and raised in the Back of the Yards of Chicago, 3 and I've never lived in Michigan. 4 Q 5 heard a lot about hand tools. Professor Fronczak, this is a case about hand tools. We've What was your first experience in life with hand 6 7 tools? 8 A 9 after World War II, came back and opened up a hardware store. A little background. My family, my father and my uncle 10 We lived -- the family lived in a flat above the hardware store 11 on 47th Street. 12 since I was a little boy. And so I worked in the hardware store ever My uncle had been a machinist, worked with him. 13 My 14 father had been a plumber before the war, a pipefitter, plumber 15 before the war. 16 we were kids. And so we started working with hand tools when Started tearing apart cars when I was probably about 17 18 12 because I had an older brother. So he got me into cars. 19 took our bikes apart, put new rear ends in bikes. 20 was done with hand tools. 21 Q 22 Where did you go to high school? 23 A 24 Yards, I went to school far southwest side at Brother Rice. 25 Q We All of this Professor Fronczak you said you grew up on the South Side. I went to school -- even though I lived in Back of the What year did you graduate from Brother Rice High School? 1067 Fronczak - Direct by Hayes 1 A It would have been 1968. 2 Q Through the years, have you had a chance to work with and 3 collect some tools, hand tools. 4 A Yes I have. 5 Q How many tools do you own today, Professor Fronczak? 6 A Easily, easily more than a thousand. 7 my grandfather, some I inherited from my father. 8 purchased. 9 Q I'm what's called a gearhead. Some I inherited from Some I Some I designed and built my own. So Professor Fronczak, to help with your testimony today, 10 did you prepare a set of slides? 11 A MR. HAYES: 12 13 Yes, I did. We're going to pull up those slides, Josh, if we can have those. 14 THE COURT: Are we in the right place here? 15 MR. HAYES: We are, your Honor. 16 THE COURT: Okay. 17 BY MR. HAYES: 18 Q 19 training, Professor Fronczak. 20 A Sure. 21 Q After graduating from Brother Rice High School, did you go 22 to college? 23 A Yes, I did. 24 Q Where did you go to college? 25 A I went -- started off with bachelor's. I'd like to start by talking about your education and I earned a 1068 Fronczak - Direct by Hayes 1 bachelor's at the University of Illinois in Urbana-Champaign. 2 Q 3 in? 4 A 5 degree between mechanical and civil engineering at the time. 6 Q What year did you graduate from the University of Illinois? 7 A With my bachelor's degree, it was 1972. 8 Q After your bachelor's degree, did you go on and get a 9 master's degree? And what was your area of study, or what was your degree My degree was in general engineering, which is a hybrid 10 A 11 my master's degree in theoretical and applied mechanics at 12 Illinois, and that was in 1974. 13 Q 14 theoretical and applied mechanics might be about? 15 A 16 It's been common across the different universities to abandon 17 theoretical applied mechanics departments and typically mold 18 them into or bring them over to a mechanical engineering 19 department. 20 I continued on at Illinois, yes, and I received -- earned Can you explain for the jury just a little bit about what Sure. At the time -- the department no longer exists. That's what was done at Illinois. So there is no more theoretical applied mechanics 21 department at Illinois. It's part of mechanical engineering. 22 So applied -- well, theoretical and applied mechanics, 23 mechanics is the study of subjects which are relevant to a wide 24 variety of engineering things such as vibrations, strength of 25 materials, fluid mechanics and so on. 1069 Fronczak - Direct by Hayes So these are things that engineers -- the fundamentals 1 2 that engineers learn that they then use to apply. And so 3 theoretical and applied mechanics, the department was the 4 oldest department of theoretical and applied mechanics in the 5 country. 6 application aspects of it. 7 Q 8 get any more formal education? 9 A Yes, I did. 10 Q What was that? 11 A It was a doctor of engineering degree at the University of 12 Kansas. 13 Doctor of Philosophy. And it had the theory on one end, but it had also the Professor Fronczak, after getting your master's, did you And notice it's not a Ph.D. It's Ph.D. stands for University of Kansas started a doctor of engineering 14 15 program in conjunction with NASA, Stanford, MIT, Tulane, 16 Kansas, I think were all part of this program where NASA said 17 they needed more application-oriented, high-level engineers. So the rigor, the requirements were the same, but the 18 19 nature of the work was more application-oriented rather than 20 theoretical-oriented. 21 Q 22 University of Kansas? 23 A 24 National Aeronautics and Space Administration, to do my 25 research. What was the focus of your doctor of engineering at the I did coursework at Kansas, but then I worked at NASA, And my project was I designed a machine for rotating 1070 Fronczak - Direct by Hayes 1 and shaking a helicopter blade in a vacuum, full-size 2 helicopter blade, and then measuring the response of the blade 3 to the hydraulic input that we had given it, the force in 4 motion input that we gave into the hub of the blade. So the blade is rotating around. 5 It's shaking up and 6 down, twisting back and forth. We made it do these things. 7 And then we had a system that I designed that would be able to 8 measure the mode shapes, the shapes of this motion that's doing 9 like this. It looks like a wet noodle. 10 Q Professor Fronczak, I'd like to move on now to your work 11 experience. 12 A Sure. 13 Q You mentioned that you worked for your dad or in your dad's 14 hardware store during high school. Did you have any jobs during college? 15 16 A Yes, I did. 17 Q What were those jobs? 18 A Well, I started off working at Central Steel & Wire as a 19 laborer after my sophomore year. 20 small business that she had bought out selling drafting board 21 tops, and I worked for her. 22 in the day, and then second shift, I worked at Central Steel & 23 Wire as a laborer. 24 25 I also worked -- my mom had a And then I worked for my dad store That was sophomore year. After my junior year, I got a job as a -- that was as a pack -- I'm sorry, as a baby powder processing engineer at 1071 Fronczak - Direct by Hayes 1 Johnson & Johnson on the South Side of Chicago, southwest side 2 of Chicago. And then after my senior year, I had completed all my 3 4 coursework except for one accounting course that I still had to 5 take care of. 6 don't know what it's called now, but it used to be Ford City 7 College by Ford Center -- or Ford -- by Ford City. And I had another job at Johnson & Johnson. 8 9 So I took care of that at Ford City College. I There, I was working as a packaging engineer. 10 Q What was your next job after working at Johnson & Johnson 11 as a packaging engineer? 12 A 13 Illinois, in the summers and then during breaks and during the 14 year, I also worked as a project engineer for Clark Deitz & 15 Associates. 16 Champaign-Urbana. Then while I was in grad school at the University of That's a consulting engineering firm in It's in Urbana. And then I also was a teaching assistant in the -- 17 18 started off in general engineering department, and then I moved 19 over to theoretical and applied mechanics department and taught 20 strength and materials there. 21 Q 22 engineer, what was your next job? 23 A 24 doctorate at Kansas. 25 where I was back and forth between campus and NASA. After working for Clark Deitz & Associates as a project Well, then I went to graduate -- or I'm sorry, for my And while I was working at Kansas, that's 1072 Fronczak - Direct by Hayes So I was really working as a project engineer for my 1 2 thesis project while I was a grad student at NASA -- I'm sorry, 3 while I was a grad student at Kansas. 4 Q After that, what was your next job? 5 A After I finished up my doctorate, I moved to Madison, 6 Wisconsin, and I was employed by the Forest Products Lab, which 7 is part of the Forest Service, which is part of the U.S. 8 Department of Agriculture. So I was an engineer for the U.S. Department of 9 10 Agriculture primarily -- well, within the Forest Service at the 11 Forest Products Lab in Madison. 12 Q 13 Products Lab? 14 A 15 product and process. 16 of machines for processing large logs into veneer. What type of engineering work were you doing at the Forest I was doing mechanical design work. I was designing both But most of my work involved the design So when you think of veneer, that's plywood. 17 So 18 plywood is made out of veneer. 19 processing the turning the logs into veneer. 20 Q 21 your next job? 22 A 23 forest project -- Forest Products Lab, I decided I wanted to 24 also start doing some teaching. 25 I was designing machines for After working for the Department of Agriculture, what was After I left the -- well, actually while I was still at the So I went part-time at the Forest Products Lab and 1073 Fronczak - Direct by Hayes 1 part-time at the university, and I was a lecturer. I was a 2 mechanical systems -- well, we had a mechanical systems design 3 group at the time, and I was a professor teaching -- or I'm 4 sorry, I was a lecturer teaching senior design as well as 5 dynamic systems analysis. 6 Q 7 What university are you talking about? 8 A 9 archrivals of Michigan. Now, you've mentioned "the university" a couple times. Oh, I'm sorry, it's University of Wisconsin-Madison, 10 Q What year did you start working at the University of 11 Wisconsin? 12 A 13 think for a second. 14 moved to Madison in '77, and I was at the Forest Products Lab 15 for full-time about three years, and then I started 16 transitioning to the university. 17 would have been about 1980. 18 Q Do you still work for the University of Wisconsin? 19 A No. 20 university. 21 Q 22 for the University of Wisconsin? 23 A 24 faculty as a lecturer and professor. 25 professor. Well, it would have been about 19 -- let's see, I got to '77, about 1980, about 1980. Because we So it was about '70 -- it I'm an emeritus professor. I'm retired from the I retired about four years ago. Approximately how many years did you work as a professor 30 -- 30 some years, 34 years or so I was at UW in the Most of the time as a 1074 Fronczak - Direct by Hayes 1 Q So I'd like to move forward now and talk a little bit about 2 your achievements. Have you received any -- have you published any 3 4 papers, articles or technical presentations throughout your 5 career, Professor Fronczak? 6 A 7 that. 8 Q 9 this case, can you focus on some that are most relevant with Yes, I have. That's part of your job as a professor to do So you obviously published a large number of them. For 10 respect to design, tool design? 11 A 12 technical publications. 13 the design activity that I did either at the Forest Products 14 Lab or following subsequent to that at the university. Well, I've published over 100 papers, articles and Virtually all of them were based on A number of mechanical systems that I designed. 15 One 16 of the papers that is part -- I think it's part of the -- part 17 of my vitae, my CV. 18 a -- for surgery. It should be. We designed a router for 19 And just mechanical -- mechanical devices. We have a 20 design for -- the words won't mean anything, but a modified 21 hypocycloid engine. 22 a variety of devices and tools. 23 Q 24 teach classes about mechanical design, tool design? 25 A You know, some hydraulic pumps and motors, As a professor at the University of Wisconsin, did you I have, yes, when I was a professor there. 1075 Fronczak - Direct by Hayes 1 Q Can you tell the jury about some of those classes? 2 A Sure. 3 courses, but primarily in the mechanical design area. 4 taught machine design. We had, as I mentioned earlier, I taught a number of So I 5 But the main one I think that's -- or the main ones 6 that I think are particularly relevant here, I taught senior 7 design. 8 students will work on projects. Senior design is a project-based course where the One example of a project that I think is particularly 9 10 relevant here is the students with my guidance designed a 11 gripping device that would be able to be converted to an 12 expansion device. 13 something. Because sometimes you want to squeeze Sometimes you want to expand something. If you're familiar with snap rings, you have 14 15 internal/external snap rings. But this was for a very 16 different application. 17 but it still was a gripping tool and expansion tool. 18 I designed a device for a welder. This was for a surgical application, We had a welder who 19 had a -- he lost ability with his left hand. 20 hand. 21 torch, but he couldn't hold the device. 22 there. 23 assist him. 24 25 That was his hold He was still able to hold and control his hand for his He couldn't hold it there. He could move it up So we designed a device to That was part of my work. I was a founder member of the -- founding member of the UW Center for Rehabilitative Engineering and Assistive 1076 Fronczak - Direct by Hayes 1 Technology where we would design -- 2 THE REPORTER: 3 THE WITNESS: 4 THE COURT: 5 THE REPORTER: 6 MR. HAYES: 7 THE WITNESS: 8 MR. HAYES: 9 THE WITNESS: Rehabilitative Center? I'm sorry. I'm sorry. Rehabilitative technology. Thank you. Professor Fronczak -Rehabilitative, yeah, I'm sorry. You got to slow down just a little bit. 10 MR. HAYES: 11 THE WITNESS: Sure. I get excited. I'm sorry. Taking down everything that you're saying. That gives the gamut a little bit. 12 BY MR. HAYES: 13 Q 14 taught at the university. 15 reverse engineering. 16 A Yes. 17 Q Have you taught any courses at the University of Wisconsin 18 about reverse engineering? 19 A 20 although our senior design course typically would have a little 21 bit of reverse engineering. 22 Sure. One more question with respect to courses you've Yes, I did. We've heard a lot in this case about Two parts -- or two in two different courses, But I'm not sure how many years ago, probably about 20 23 years ago, I had a student approach me who had had a summer 24 internship at Ford. 25 we're not doing reverse engineering courses here at Madison?" And he came back and he says, "How come 1077 Fronczak - Direct by Hayes He said, "First thing, my whole summer assignment was 1 2 doing reverse engineering at Ford." It was a student that I 3 knew pretty well, so we got together and we actually proposed a 4 course. 5 engineering. And we had a senior graduate level course in reverse 6 We called it mechanical dissection because the idea is 7 to take things apart, study them, see how they perform, see how 8 they're made, see how they're manufactured, see what materials 9 they are. So it's very much like biology, you know, where you 10 11 dissect things, but we were dissecting machines. 12 Machines, products, devices. And then also we introduced -- or I introduced, I 13 14 should say, reverse engineering section into our Introduction 15 to Engineering course, which was a common engineering course. Not every department required it, but the vast number 16 17 of departments in the college required it or at least 18 recommended it and all gave credit for it as a freshman course, 19 and that -- a good section of that was reverse engineering. 20 Q Professor Fronczak, do you have any patents? 21 A Yes, I do. 22 Q Can you talk a little bit about generally the patents that 23 you have? 24 A 25 eight U.S. patents or patent applications. Sure. And it says here I've got -- I'm an inventor on The way it works at 1078 Fronczak - Direct by Hayes 1 Wisconsin is that -- and which is where most of these are. 2 Seven of the eight are while I was at the University of 3 Wisconsin. What we typically do as a faculty member or a grad 4 5 student or the students, we will assign the rights to the 6 University of Wisconsin, Wisconsin Alumni Research Foundation. 7 That's commonly called WARF, W-A-R-F. And so we assign our rights over there, and then they 8 9 decide whether they will pursue the patent. Sometimes they 10 will pursue the patent. But it's when they have decided to 11 submit an application, that's when, as a faculty member as a -- 12 for my CV purposes, that's when I've done my job basically in 13 terms of how the university looks at patents. And so that's why I say eight U.S. patents or patent 14 15 applications, seven of which fall in that category. 16 Q 17 received any awards? 18 A Yes, I have. 19 Q Spend a minute here telling us about the awards you've 20 received throughout your career. 21 A 22 think are -- the ones I'm proudest of, I guess I'd say. Throughout your career, Professor Fronczak, have you Well, this is a sampling of them. I guess it's the ones I 23 The first one was the USDA Superior Service Award. 24 There was -- this was tied to the -- I said I was designing 25 wood veneer processing equipment. So I have a patent along 1079 Fronczak - Direct by Hayes 1 with two other coinventors. I led the team, and we have a patent on a powered 2 3 backup roll. It's a device to help more effectively conserve 4 or peel lumber, peel the log down into veneer and get better 5 yield with better accuracy of the veneer. 6 million dollars' worth of product per year per every plant that 7 it's in. So I received the patent. 8 It saves about a I was awarded the patent. 9 And then the USDA Superior Service Award was an award that was 10 given to the -- to me by the Department of Agriculture for this 11 device, which, you know, was quickly adopted by many companies 12 in the industry. 13 Q You list as your next award the SAE -- 14 A Okay, I'm sorry. 15 Q -- fellow? 16 A The next one, SAE fellow. 17 Society of Automotive Engineers, but really it's SAE. 18 I'm an SAE fellow. SAE, most people think of it as And so 19 This was awarded to me for my contributions to design 20 education and for the work that I had done on hybrid vehicles. 21 So I had done a lot of research in my life on hybrid vehicles. 22 Work was sponsored by General Motors, Ford, the EPA. 23 And SAE recognized me as a fellow. It's an honor 24 that's given to the members -- by the members of SAE to members 25 of SAE that they feel have given high contributions to the 1080 Fronczak - Direct by Hayes 1 technology. And then the Benjamin Smith Reynolds Award is the next 2 3 one. That's a college of engineering -- University of 4 Wisconsin-Madison College of Engineering teaching award. 5 was given to me in recognition of my contributions to design 6 engineering education at the UW. It I was -- my home's mechanical engineering, but I also 7 8 had an appointment in biomedical engineering. 9 a design program in biomedical engineering along with a 10 And I started up colleague in the biomedical engineering department. And then UW Teaching Academy, it's along the similar 11 12 lines, but it's not a college of engineering award. It's a 13 university-wide award to recognize people who have made 14 contributions and have shown particular emphasis throughout 15 their careers on teaching particularly undergraduates, but 16 teaching. People that are teachers and dedicated to teaching and 17 18 have made accomplishments in the university's mission to 19 produce good students. 20 Q 21 means you're retired from the university. 22 A That's right. 23 Q Are you currently doing any other jobs or working on 24 anything else? 25 A Good engineers in our case. So you mentioned that you're a professor emeritus. Sure. I'm still working. That I do consulting work, a number 1081 Fronczak - Direct by Hayes 1 of -- a number of different consulting activities. 2 Cases like this, I'm a consultant. But I also am a consultant to a couple local design 3 4 firms in Madison will call me in on occasion on particular 5 projects, particular aspects that I'll consult on. Sometimes it's a short consultation. 6 7 hour. It might be a longer consultation. 8 several days of work. 9 It might be half It might involve might just be local. It might involve some traveling. It But also I work as a senior mechanical design adviser 10 11 to Marvel Medtech. That's a local Madison and suburb, 12 Middleton-based medical products startup firm that's based on a 13 patent that a few students and I got when I was teaching the 14 biomedical engineering course. And so Marvel Medtech is in the process of trying to 15 16 commercialize this. 17 I go over there and work with the engineers, and I'm a 18 consultant regularly on that project. 19 senior mechanical design adviser. 20 Q 21 Medtech? 22 A 23 that we're working on. 24 offshoot. 25 And I work with the engineers. Every week I think my title is What type of product are you working on designing at Marvel Marvel Medtech, our product -- we only have one product Well, one product with a little It's an MRI image-guided breast biopsy positioning 1082 Fronczak - Direct by Hayes 1 device and for -- for identifying very, very early stage 2 tumors, breast cancer tumors in hard-to-find regions. 3 finding BB-size tumors and then being able to identify these 4 tumors and then being able to ablate these tumors. We're We're looking at cryogenic ablation, which leaves the 5 6 tissue there, which enables this tissue to continue to generate 7 antibodies to prevent or reduce the likelihood of future tumors 8 from forming. 9 Q And what benefits does your invention there at Marvel 10 Medtech provide to a patient in general? 11 A 12 going to save lives. 13 don't think. Well, a couple things. First of all, it saves -- it's I mean, there's no question about that, I But more important -- well, I wouldn't say more 14 15 important thing. 16 also important that it creates a much quicker diagnosis, much 17 less invasive intervention, much smaller level because it's 18 early. 19 Nothing more important than that. But it's And the nature of our intervention is long-lasting. MR. HAYES: Thank you. Your Honor, at this time I 20 offer Professor Fronczak as an expert in the relevant art in 21 this case. 22 MR. SKIERMONT: 23 THE COURT: No objection. This witness, too, is an expert and will 24 be permitted to offer opinions about these issues. 25 welcome to proceed, Counsel. You're 1083 Fronczak - Direct by Hayes 1 BY MR. HAYES: 2 Q 3 on the opinions that you've given in this case. 4 A Sure. 5 Q Have you given both non-infringement and invalidity 6 opinions in this case? 7 A Yes, I have. 8 Q Can we start with the non-infringement opinions? 9 A Sure. It's my opinion -- can I have the tools up here? 10 Q Sure. Let's grab the tools. So Professor Fronczak, I'd like to transition now and focus Did you bring a bunch of tools with you today 11 12 assembled and disassembled? 13 A 14 I'll need it, but they're in those brown envelopes, those brown 15 manila envelopes. They're in envelopes. I don't need it right now. Sometime (Objects tendered to the witness.) 16 THE WITNESS: 17 Thank you. Okay, so I'm sorry, back to 18 the question. 19 BY MR. HAYES: 20 Q 21 analysis in this case. 22 A Right. 23 Q What generally did you consider? 24 A I didn't -- you had asked me what opinion I gave. 25 Q Okay. So I wanted to start by focusing on your non-infringement 1084 Fronczak - Direct by Hayes 1 A And my opinion was that the Max Axess wrench does not 2 infringe on either of the two patents, the claims, the asserted 3 claims of the two patents in this case. 4 Q 5 asserted patents? 6 A 7 '470, and I think the other one is '579. 8 Q 9 in coming to your opinions in this case? And what are those two asserted claims? There's two asserted patents. What are those two I remember one number is And did you study and analyze the '470 and the '579 patents 10 A Yes, I did. 11 Q Did you consider and analyze the claims? 12 A Yes, I did. 13 Q And the specifications and figures? 14 A Yes, I did. 15 Q Did you consider and analyze the Court's claim construction 16 in performing your non-infringement analysis in this case? 17 A Yes, I did. 18 Q Did you consider the level of ordinary skill in the art in 19 the context of your non-infringement analysis in this case? 20 A Yes, I did. 21 Q Why? 22 A Well, level of skill, ordinary skill in the art, I think if 23 you recall back to Dr. Cagan's testimony, I think he was asked 24 some questions about this as well. 25 So the level of ordinary skill in the art, this is at 1085 Fronczak - Direct by Hayes 1 the time of the invention, the people who are familiar with 2 this technology at a certain level and what would be their 3 understanding of the terms of the patent, of what's in the 4 patent. What does this really mean, what's invented. So you have to put yourself in the mind of someone of 5 6 ordinary skill in the art at the time of the invention of the 7 patent. 8 Q 9 did you perform those from the perspective of one of ordinary In this case in performing your non-infringement opinions, 10 skill in the art? 11 A Yes, I did. 12 Q What in your opinion, Professor Fronczak, is the experience 13 necessary to be one of skill in the art in this case? 14 A 15 we're in the same -- same -- same level of understanding of 16 this, that it's basically an engineer, one who has a degree in 17 mechanical engineering or a closely related field. 18 year or a couple years of experience in the design of products 19 of comparable complexity. 20 I'm consistent -- I think Dr. Cagan and I, we agree that And then a And in this case, we have a fairly straightforward 21 mechanism, but there's a little bit of complexity to it. 22 not a hammer. It's It's more complex than a hammer. 23 So an engineer would -- one of ordinary skill in the 24 art would be someone with an engineering degree in mechanical 25 engineering or related field and someone with some experience 1086 Fronczak - Direct by Hayes 1 in a related field doing about the same level of engineering, 2 year or two experience. 3 Q 4 performing your non-infringement opinion in this case was the 5 claims? 6 A Yes, I did. 7 Q Was there a particular -- with respect to the '579 patent, 8 was there a particular claim element that you looked at or 9 focused on in performing your non-infringement analysis? So I think you said one of the things you looked at in 10 A Well, certainly not at the very, very beginning when I 11 first started looking at this. 12 learned more about the patents and more about the claims and 13 more about the device, it became pretty evident to me at least 14 that one of the cruxes of the invention, it revolved around the 15 gripping element. But as I progressed through and You've heard a lot about the gripping element. 16 And so 17 the claims related -- the parts of the claims related to the 18 gripping element became very evident a focus of my attention. 19 Q 20 focused on there is the one that starts, "each at least one 21 gripping element;" is that right? 22 A 23 at the other ones, but the focus quickly became here. 24 Q 25 asserted in this case, but let's start here. So let's pull up that claim. That's correct. The claim element that you're I want to make sure I looked at -- looked And we'll go through each one of the claims that are 1087 Fronczak - Direct by Hayes Josh, if we could pull up the element, "each at least 1 2 one gripping element." 3 A Can I open these up? 4 THE COURT: You're welcome to. 5 THE WITNESS: Thank you. 6 BY MR. HAYES: 7 Q 8 Okay, I'm sorry, yes. pieces and parts up there. Professor Fronczak, it seems like you've got a number of Can you just tell the jury generally what you have 9 10 here before we get to -- 11 A 12 Axess wrench, and I disassembled it. 13 Actually I bought a couple, and then I disassembled it. Sure. Generally what I have is I went out and bought a Max I inspected it first. I took it apart and -- to look and see what all the 14 15 different parts were and to see how it works, to see the 16 insides of how it works. 17 Q 18 specifically the element, "each at least one gripping element." 19 If you could explain to the jury -- this is the element that 20 has the red X on the right side -- what the claim requires with 21 respect to the parts of the gripping element based on the 22 claim, claim 1 of the '579 patent? 23 A 24 says that it's an arm portion configured to engage one of it -- 25 of said at least one guide and a force transfer element Okay. Sure. So let's get back to looking at the claim here, The wording -- the wording of the -- of the claim 1088 Fronczak - Direct by Hayes 1 contiguous with the arm portion. 2 Q So -- 3 A Oh, I'm sorry, I think I missed your question, sir. 4 Q So let's take a step back. 5 A Yeah. 6 Q At a little higher level, we're looking at the gripping 7 element? 8 A Right. 9 Q I'd like you to talk to the jury about based on the claim 10 language, what parts are required or what the gripping element 11 requires. 12 A Now I'm tracking. 13 Q Okay. 14 A Okay. 15 least -- has three things. 16 According to the claim, it has to have a body portion, it has 17 to have an arm portion, and it has to have a force transfer 18 element. 19 Q 20 patent. 21 is claim 9. 22 A That's correct. 23 Q Can you explain -- claim 9 is a dependent claim. 24 explain to the jury what that means with respect to what 25 requirements claim 9 must have? I'm sorry. We had the gripping element, and it has to have at It has to have a body portion. And that's the first of the asserted claims for the '579 The second of the asserted claims for the '579 patent Can you 1089 Fronczak - Direct by Hayes 1 A Sure. The way the patents are laid out is there's a -- can 2 be a number of independent claims and then claims that depend 3 upon the independent claim. 4 independent claim, and then claim 9 is a dependent claim. 5 claims depends upon claim 1. 6 in claim 1. In this case, claim 1 was the It And here we see it's as recited So it has to have everything that's in claim 1. So if it was in -- if it wasn't in claim 1, it's not 7 8 in claim 9. Because in order for it to be in claim 9, it has 9 to be in claim 1. 10 Q So then claim 9 depends from claim 1. 11 also require the gripping element that we see here? 12 A 13 things in order for it to be an infringing claim. 14 Q Is there any dispute about that in this case? 15 A I'm sorry? 16 Q Is there any dispute about that in this case? 17 A I don't believe there's any dispute about that. 18 pure and simple. 19 Q 20 which one of the elements are you focused on or limitations are 21 you focused on with respect to claim 16 of the '579 patent? 22 A 23 element has to have a body portion, an arm portion and a force 24 transfer element. 25 Q That's correct. Does claim 9 then It has to have each and every one of these The final claim of the '579 patent is claim 16. That's Again, I focused on that light grayed limitation where gripping It has to have those three things. So all the claims then in the '579 patent require this 1090 Fronczak - Direct by Hayes 1 gripping element limitation? 2 A That's my understanding, yes. 3 Q Let's take a quick look at the '470 claims. 4 claim 1 here. 5 subsection C and explain to the jury what's required by 6 subsection C of claim 1 of the '470 patent? 7 A 8 wording is exactly correct the same, but it's very similar. Okay. That's my recollection. You've got two red X's. It's very, very similar. Can we start with I can't remember if the It has to have a gripping element. 9 This is The gripping 10 element has to have the same three things. 11 body portion, it has to have an arm portion, and it has to have 12 a force transfer element. 13 those things. 14 Q 15 Can you explain to the jury what claim requirement -- claim 16 limitation you're focusing on there? 17 A I'm sorry, I missed the first part of your question, sir. 18 Q Can you explain to the jury -- 19 A Yes. 20 Q -- the bottom claim limitation that you're focusing on? 21 A Okay, sure. 22 first element further includes one aligning element." 23 don't think there's been a lot of discussions about aligning 24 elements in this. 25 It has to have a So it's got to have all three of One more element here you've got a red X on on the bottom. Yeah, the bottom one is, it says, "wherein the And I Dr. Cagan addressed it, but it's kind of been lost, 1091 Fronczak - Direct by Hayes 1 perhaps lost a little bit in the focus on the gripping -- the 2 gripping element. 3 one aligning element. 4 use this? 5 Q Sure. 6 A Okay. 7 what I did is I took out -- there's -- if you remember, there 8 was a number of pins that go -- can you see these holes? 9 There's a number of holes around here. And so the first element includes at least If you -- actually it works nice. Can I So if we look at this tool, when I disassembled it, Maybe if you take out your -- you each have a wrench 10 11 here, so you'll see those. There's six holes around here, and 12 there's pins that go through those holes. And so pins that go through those holes, they're the 13 14 aligning elements. If you don't have those pins in there as I 15 have here, the parts don't align. 16 aligned in a certain configuration. 17 Q 18 patent. 19 A That is correct. 20 Q Does dependent 9 include all the limitations that we just 21 saw in claim 1? 22 A 23 upon claim 1, it has to have everything that's in claim 1. 24 Q 25 a minute about your non-infringement analysis. And one more claim here. So those keeps the parts Let's look at claim 9 of the '470 Is this a dependent claim again? That is correct. Okay. This is another dependent claim. Because it's a dependent claim depending Just take a step back here and talk to the jury for 1092 Fronczak - Direct by Hayes How many elements do you need to show are not present 1 2 in the Max Axess Locking Wrench such that it is not found to 3 infringe any of the asserted claims in this case? 4 A 5 the allegedly offending device or infringing device doesn't 6 have even just one element or one limitation, then it doesn't 7 infringe. It has to have each and every one of those to 8 infringe. If it doesn't have one, it doesn't infringe. 9 Q If there's one limitation that's not met, then the -- if And what did you mean to indicate by including the red X's 10 in the right column of each one of the claims, asserted claims 11 we just saw in this case? 12 A 13 Infringement." 14 these boxes, then it would infringe. Well, if you look to the title of the slide, it says, "No And if we had green checks on every one of But if you got a red X, that means it's not there, 15 16 okay? So the red X indicates that in my opinion, the 17 limitation (c) and then that last line of (d), those 18 limitations are not met in the Max Axess wrench. 19 have those things that need to be there for it to be 20 infringing. 21 Q 22 case -- the Max Axess Locking Wrench is there. It does not In performing your non-infringement analysis in this In performing your non-infringement analysis in this 23 24 case, what did you compare the claims to? 25 A Well, I compared the claims as construed by the Court to 1093 Fronczak - Direct by Hayes 1 the actual Max Axess wrench. I said wrench, two wrenches. 2 There's a 6-inch wrench and an 8-inch wrench. I've got both of them that I looked at. 3 Both of them 4 I bought. Both of them I took apart, and I looked at both of 5 them. 6 Q 7 considered the patents in this case including the specification 8 in the claims. So both allegedly infringing wrenches. You mentioned earlier in doing your analysis, you Let's take a look at the specification that you 9 10 considered. 11 the jury by this next slide, slide 10? 12 A 13 patent, which you see in that lower left has a picture with the 14 six gripping elements including -- of the '470 patent including 15 the force transfer elements. 16 I've pulled up here -- what are you trying to show Well, here we have the actual Figure 1 from the '470 So what I did was I extracted a portion of that just 17 so that it's easier to see. 18 that No. 34, No. 36, No. 38, that's a picture of the gripping 19 element in the '470 patent, Figure 1. 20 So in the upper right where we see Then below that is the wording of the claim language 21 that we just saw basically associated with the '470 patent and 22 we see with the '579 patent. 23 figures are the same and I did the same thing. 24 25 The figure's the same. The I took that -- extracted that one just so you can see a single one because it's a little bit of a mumbled, jumbled 1094 Fronczak - Direct by Hayes 1 mess trying to look at those six of them. 2 Q 3 analysis you considered the Court's claim construction; is that 4 right? 5 A That's correct. 6 Q We've got a slide here with the Court's claim construction. 7 Can you talk to the jury a little bit about the terms here and 8 how the Court construed them? 9 A You mentioned earlier in performing your non-infringement Sure. The Court considers things and then will -- where 10 there's argument over what these words mean, then the Court 11 will define what these words or terms mean. 12 word, sometimes it's a term, sometimes it's a phrase. Sometimes it's a So it will order a -- it will -- like it says, 13 14 memorandum opinion and order. It will order that this is what 15 is meant by an arm portion that I need to do -- understand and 16 need to apply when doing the construction -- I'm sorry, when 17 doing the analysis. 18 Q 19 at the claims in this case, did you consider the Court's claim 20 construction? 21 A Absolutely, yes. 22 Q Can you tell the jury what we see here on this next slide, 23 slide 12? 24 A 25 start off with the one on the left. And when doing your non-infringement analysis and looking Okay. So what we see is that the wording of the -- let's What we have is the 1095 Fronczak - Direct by Hayes 1 wording of the '579 patent for the talking about the gripping 2 element. 3 including three things we talked about. And so we have at least one gripping element And then beneath it, we have the definition of those 4 5 terms arm portion -- I shouldn't say definition, the 6 construction. 7 and "body portion" as ordered by the Court for both the '579 8 patent and the '470 patent, the two patents that we're looking 9 at in the case. The construction of those terms "arm portion" 10 Q Here, we've got the specification of Loggerhead's patents 11 that we just looked at on the left. 12 got the -- we've seen this a lot now, the gripping element from 13 the Max Axess. And on the right, we've Can you explain to the jury what you're trying to show 14 15 here? 16 A 17 the figure's the same for both the '470 and the '579. 18 just have one figure there for the Loggerhead patent, and here 19 is the gripping element. Sure. Like I said, I extracted one of the patented -- and So I We can clearly see an arm on the Loggerhead gripping 20 21 element. There's no -- I don't think there's any -- anybody 22 that looks at this that doesn't know what the arm is. 23 I'm also showing the Max Axess Locking Wrench gripping element, 24 and these are what I'm comparing when I'm comparing using the 25 Court's claim construction. And then 1096 Fronczak - Direct by Hayes I'm seeing does the Max Axess Locking Wrench gripping 1 2 element have all of the elements or all the limitations as 3 construed by the Court. 4 Q 5 Axess Locking Wrench gripping elements? 6 A Professor Fronczak, did you bring along some of the Max Yes, I have a bunch here, one fell. MR. HAYES: 7 8 Let me get it. Your Honor, may I approach and give these to the jury? THE COURT: 9 Sure. 10 THE WITNESS: 11 MR. HAYES: 12 THE WITNESS: 13 MR. HAYES: Do you want all of them? Yeah. That's the ones I have that are loose. For the record, I'm handing the jury some 14 of the gripping elements from the Max Axess Locking Wrench. 15 Some of them still have the pin, the gripping element or the 16 force transfer element in them, and some of them we've removed 17 the pin. THE WITNESS: 18 Just so it's clear, those are the ones 19 that I removed from the 8-inch Max Axess wrench. 20 BY MR. HAYES: 21 Q 22 at them, we can continue through the slides here. 23 A 24 25 As the jury passes those around and gets a chance to look Sure. MR. SKIERMONT: Your Honor, could we have a brief sidebar while the jury's looking at those? 1097 Fronczak - Direct by Hayes THE COURT: 1 Sure. (At sidebar outside the hearing of the jury.) 2 MR. SKIERMONT: 3 So we objected to some slides because 4 we thought they were going down this road. 5 on summary judgment, further construed a claim and found that 6 the Max Axess Locking Wrench has an arm portion. 7 seems like we're getting ready to have an -MR. SERNEL: 8 9 The Court ordered And so it Summary judgment in your favor, is that -MR. SKIERMONT: 10 The arm portion of the MALW's gripping 11 element has a portion of the element which engages the guide 12 that has a portion that's relevant. MR. SERNEL: 13 That's construing in the light most 14 favorable to you to deny summary judgment. 15 for summary judgment. MR. SKIERMONT: 16 17 This is no different than the lock. THE COURT: 18 19 No, no. You're now asking I think that's a matter for cross-examination. MR. SKIERMONT: 20 Okay. (In open court in the hearing of the jury.) 21 22 BY MR. HAYES: 23 Q 24 to slide 14 now, Professor Fronczak? 25 A I think we just talked about slide 13. Sure. Can we move forward 1098 Fronczak - Direct by Hayes 1 Q Can you explain to the jury what you're trying to show here 2 on slide 14 and what you've got on the top and the bottom of 3 these slides? 4 A 5 important for me to understand what is meant by -- you know, 6 what the inventor meant by these terms. Okay. So what I have is part of my analysis. I'm looking at the claims themselves. 7 8 the description, the written description. 9 figures. It's I'm looking at I'm looking at the I'm also looking at the prosecution history, which is 10 the correspondence between the applicant Loggerhead and the 11 Patent Office in order to understand what they were considering 12 and what the applicant represented as what their understanding 13 was of their invention. So that's what I'm showing here. Mr. Buchanan, you saw it just earlier. 14 Mr. Buchanan 15 had a patent, and the gripping element from Mr. Buchanan's 16 patent is shown here. 17 forth between the Patent Office and between Loggerhead's 18 representatives. And there was some discourse back and And what we're looking at is the Loggerhead arm -- I'm 19 20 sorry, the Loggerhead gripping element, which shows an arm. 21 And Buchanan, which the Buchanan gripping element which 22 Loggerhead submits does not contain an arm portion. 23 Q 24 with Mr. Owen. 25 A Another slide here, and I think we've previously seen this Can you explain what we see here? That's correct. This is another response. If you look in 1099 Fronczak - Direct by Hayes 1 the left, it says response to pending, bunch a numbers, 2 rejection. And so what we have is that, once again, this is 3 4 additional correspondence between the applicant and the Patent 5 Office and points out that in Buchanan, the force transfer 6 element -- that's that pin that goes through that force 7 transfer or through the gripping element does not contain an 8 arm portion. It says the force transfer element, the pin of 9 10 Buchanan is directly attached to the body portion. 11 Furthermore, it says Buchanan does not teach or suggest an arm 12 portion. 13 Q 14 on slide 16? 15 A 16 better now from looking at the patent, looking at everything 17 involved. 18 element has to have, what are the different parts of it. It doesn't have an arm. Turn to the next slide. Okay. What are you trying to show here So what I'm looking at is we understand a little bit We understand a little bit better what this gripping 19 And we know that the inventor, Mr. Brown at 20 Loggerhead, had told the Patent Office that this device, this 21 gripping element in Buchanan doesn't have an arm. 22 mean, that's certainly a reasonable position. 23 We're looking now at the right side. And -- I I'm looking at 24 and saying, okay, if I'm looking at the Max Axess gripping 25 element and I'm saying I know this block with the pin coming 1100 Fronczak - Direct by Hayes 1 through it on the left doesn't have an arm, is there anything 2 that an engineer, one of ordinary skill in the art, would look 3 at the block on the right that has this pin going through it. 4 Is there anything there that would suggest that this is 5 different with respect to having an arm? 6 So I'm looking at it. I'm not looking at Buchanan to 7 determine infringement. I'm just looking at Buchanan to 8 understand what it is was communicated by Mr. Brown, Loggerhead 9 to the Patent Office about what they understood an arm to be. And then I'm looking at that to inform me and saying, 10 11 okay, we've got this gripping element, this block with the 12 force transfer element coming through it. 13 ordinary skill in the art would look and say does this have an 14 arm or doesn't this have an arm? 15 Q 16 show here on slide 17? 17 A 18 those two images that I had in the previous slide, the 19 Buchanan, which is described as having no arm, the Max Axess 20 Locking Wrench gripping element. 21 no arm. Let's go ahead to the next slide. Okay. Is that what one of What are you trying to So what we have is we've got those two pictures, That, my conclusion is it has And then I'm looking at the Loggerhead, and I'm 22 23 saying, okay, you know, is there a difference here? 24 something that I'm missing? 25 no. Is there And I'm looking at it and saying Loggerhead has a body portion. It has the three parts we 1101 Fronczak - Direct by Hayes 1 need. It has a body portion, that's at 34. 2 3 portion, 36. It actually has two arms. 4 it can have two, but this one has two. 5 It has an arm And it can have one, transfer element, 38, going through it. And then it has a force I'm looking and I'm comparing the Loggerhead device to 6 7 the Max Axess gripping element using the Court's claim 8 construction, using my understanding of what Mr. Brown said his 9 patent was with respect to the gripping element, and that's 10 what I'm showing here. 11 Q 12 which includes the actual claim language and the Court's claim 13 construction. Okay. So let's go back to claim 12 -- or sorry, slide 12, In light of all the information that you've just 14 15 considered, can you talk to the jury about how you performed 16 your final non-infringement analysis with respect to the claim 17 language, the Court's claim construction and the actual Max 18 Axess Locking Wrench gripping element that the ladies and 19 gentlemen of the jury have some to look at. 20 A 21 construction order on the bottom to control the analysis. 22 That's the thing that we have to apply, okay, in this analysis. 23 So I'm using the Court's order, the Court's claim And I'm looking at the claim language. 24 the construction of the device. 25 information that I have. I'm looking at I'm looking at all the And I'm saying using the Court's 1102 Fronczak - Direct by Hayes 1 order, how would one of ordinary skill in the art look at this 2 arm portion, look at the body portion and interpret, 3 understand -- what would they understand these claims to mean? And based on that, I think one of ordinary skill in 4 5 the art, you know, an engineer is going to look at this, an 6 engineer with a little bit of experience and a little bit 7 experience in mechanisms design is going to look at this and 8 say, okay, yeah, this thing, you know, Loggerhead has a patent, 9 has what we call an arm portion. I understand that. And they're going to look at the gripping element for 10 11 the Max Axess wrench. And using the Court's claim 12 construction, they're going to say it's just not there. 13 doesn't have an arm portion. 14 Q 15 before, you had a second red X here on the bottom of claim 1 of 16 the '470 patent. 17 that limitation. It When we looked at your slides with the red X's on them I'd now like to take a minute and look at Can you kind of re-orient us all here with what we 18 19 should be looking at. 20 there to kind of get us oriented in what we need to look at 21 with respect to this final limitation of claim 1 of the '470 22 patent. 23 A 24 Appreciate it. 25 Okay. It might be easiest if you used the tool If you wouldn't mind, get your tools back out. Or just look at somebody's. So what we have -- remember the aligning elements, 1103 Fronczak - Direct by Hayes 1 we've got these different parts. We've got first -- a first 2 element, second element, and then we have the gripping elements 3 we talked about. There's some other things going on. But then we have these pins that go through the holes, 4 5 and hopefully you can see this here. Here, I'll put it on a 6 light background. 7 You can see where I ground off the heads of those aligning 8 elements, okay. And so you should be able to see the holes. And so there's holes left in this part. Now, this part is the second element. 9 10 first element. This is the second element. 11 argument about that. 12 This isn't the There's no -- no this over here is the second element. We all -- I think everybody agrees that And these pins over here, these rivets are pressed -- 13 14 during manufacturing, they're pressed into this. 15 pressed through -- oops, I'm sorry. 16 THE COURT: 17 THE WITNESS: 18 They're That's all right. Excuse me. They pass through these slots over here. Let me put this like this so you can see a little 19 20 better. 21 there is one, two, three, four, five, six arch slots. 22 pins pass through. 23 They pass through those slots. This is the first element. The slots you see So those They pass through it. 24 They've got to be clearance there. They have to pass freely. 25 Because when this tool opens and closes, when you open and 1104 Fronczak - Direct by Hayes 1 close, when you squeeze the handles, these aligning pins stay 2 fixed to the second element and pass through and don't -- 3 they're not tight. They're not -- they're not included in that first 4 5 element -- or second element. 6 in the second -- the second element. 7 included in the first element. I'm sorry, they're not They pass through the first element. 8 9 I'm sorry, they're not included And that I believe is actually what Dr. Cagan testified and showed during 10 his -- oh, you got it up already. 11 Q 12 presentation. So we've got the next slides here that are from Dr. Cagan's In the context of this first and second element 13 14 discussion we've just been having, can you use slide 18 here to 15 help the jury better explain what it is you've been saying? 16 A 17 causing me problems is the first element, second element 18 because these are reversed in the patent and in the Max Axess 19 wrench. Sure. And one of the things that, you know, keeps on So the first element in the patent is on the outside. 20 21 That's the outside plates. 22 because of the way things are defined here, are the inside 23 ones. 24 have to interpret it the way the claims are written. 25 The first element of the Max Axess, That's because of the way the claims were written. We So what we have here is an illustration that Dr. Cagan 1105 Fronczak - Direct by Hayes 1 artfully prepared, really nice presentation, that shows the 2 first element, which is that second center portion of the Max 3 Axess. And then highlighted in blue are these aligning 4 5 elements that I've just been talking about. 6 Q 7 requires with respect to the aligning elements -- 8 A Sure. 9 Q -- and the first and second element? 10 A Okay. 11 Q Should we move to the next slide, would that be easier? 12 A Okay. And so could you talk a little bit about what the claim So the -- Yeah, yeah, thank you. Okay. 13 So two things and I'm trying to -- it's a 14 little fuzzy. I'm trying to... oh, okay, yeah. So the 15 highlighted area in blue, we're talking about these aligning 16 elements. "Along respective set at least one guide wherein the 17 18 first element further includes at least one aligning element," 19 then a couple other limitations on that alignment, aligning 20 element "such that it is disposed between an adjacent pair of 21 guides. So the guides, remember, are these slots over here, 22 23 okay? So we have to have aligning elements between those 24 slots, and then they have to be parallel to the force transfer 25 elements. 1106 Fronczak - Direct by Hayes The force transfer elements are the pins that don't 1 2 go -- don't have anything to do with these slots, okay? They 3 don't have anything to do with these slots. 4 ones that engage these curved slots, the slots that go in. 5 That's clear, no question. 6 elements go. The pins are the That's where those force transfer But it has to be included in the first element, okay? 7 8 So remember in the Max Axess, this is the first element. 9 pins go -- the aligning pins -- I got one here -- goes through 10 The these, but this thing moves back and forth. On the other hand, these things are pressed in here. 11 12 They're headed over. The material is deformed. And in order 13 to get these pins free from the second element -- this is the 14 second element -- I had to grind them off. 15 I ground off the heads. That's why these don't have 16 the second head on them. 17 a punch. 18 And they have to be for the wrench to function properly. 19 And then I had to drive them out with But to get them through here, they're free and clear. So consequently, my argument here is that these -- one 20 of ordinary skill in the art would look at these pins and say, 21 well, are they included in the first element? 22 included in the second element? 23 Are they Are they included in both? Now, looking at this a little bit more, you look at -- 24 if my memory is correct, Dr. Cagan said the force transfer 25 element passed through the first element, therefore, they are 1107 Fronczak - Direct by Hayes 1 included in the first element. I don't want to quote him -- 2 I'm not saying that's the exact words. 3 exact words or very close to it. I think those were the But you look at it, the gripping elements also pass 4 5 through. We can see those gripping elements. 6 part. 7 element. 8 are included in the first element. 9 That's the great okay? Those gripping elements also pass through the first But there's no argument that the gripping elements They're a separate thing, Furthermore, one of ordinary skill in the art in my 10 11 opinion would look at the way these pins are attached. And it 12 would be reasonable for them to say, yeah, they're included in 13 this because they are formed such that they are part of this. 14 They don't move with respect to it. 15 They're positioned by it. They're captured by it. They're held by it. Therefore, they're -- in my opinion, they're included 16 17 by it, okay, or included in that. 18 this. 19 I'm sorry, I keep doing that. 20 Q 21 analysis here, so let's go back to where we started. 22 just looking at the '470 claims. 23 They are not included in They pass through it, but they pass through for -- oops, I apologize. Just about ready to finish up on your non-infringement We were Can you summarize for the jury what your opinion is, 24 Professor Fronczak, with whether or not the Max Axess infringes 25 any of the asserted '470 patent claims in this case? 1108 Fronczak - Direct by Hayes 1 A My opinion is that it does not infringe on any of the 2 asserted claims of the '470 patent. 3 Q 4 for the jury what your non-infringement opinion is with respect 5 to whether or not the Max Axess Locking Wrench infringes any of 6 the asserted claims of the '579 patent in this case? 7 A 8 does not infringe on any of the asserted claims of the '579 9 patent. And then with respect to the '579 patent, can you summarize It does not -- it's my opinion that the Max Axess wrench 10 MR. HAYES: So, your Honor, I'm about ready to -- 11 THE WITNESS: 12 MR. HAYES: I'm about ready to transfer to invalidity. 13 THE COURT: I think this is a good time for a break. I've just given -- 14 It's almost 5:00 o'clock. 15 9:30 tomorrow morning. 16 THE WITNESS: 17 THE COURT: 18 19 All right, ladies and gentlemen, Can we get the gripping elements? The professor wants his toys back. (Laughter) THE WITNESS: Thank you, your Honor. 20 (Off-the-record discussion.) 21 (Jury exits courtroom at 4:54 p.m.) 22 (Pause in proceedings.) 23 24 25 MR. HAYES: Just a quick clarification on whether we can talk to the witness or not. THE COURT: Oh, I should have -- I should have talked 1109 Fronczak - Direct by Hayes 1 2 about that. MR. HAYES: If we tender him for cross, it's no. But 3 if he's not tendered and it's our witness, we represent him, he 4 can talk. I just want clarification. 5 THE COURT: Except you don't represent your experts. 6 MR. PELTZ: And, your Honor, even furthermore, we just 7 asked them to confirm they wouldn't talk to their witness just 8 like your Honor instructed us not to talk to our witness when 9 he was on direct. 10 different. 11 back the Judge? And they said, No, we want the rule to be And I said, Are you kidding? We're going to call Do you think she's going to agree to that? 12 MR. HAYES: I just want clarification. 13 THE COURT: I don't change the rules midstream. 14 MR. PELTZ: Thank you. 15 16 (Adjourned at 5:00 p.m.) C E R T I F I C A T E 17 18 We, CHARLES ZANDI and LISA H. BREITER, certify that the 19 foregoing is a correct transcript of the record of proceedings 20 in the above-entitled matter. 21 22 23 24 25 /s/ CHARLES R. ZANDI CHARLES R. ZANDI, CSR, RPR, FCRR Official Court Reporter May 10, 2017 /s/ LISA H. BREITER LISA H. BREITER, CSR, RMR, CRR Official Court Reporter May 10, 2017 1528 1 because he was aware of what our design was. 2 Q. 3 before the May 22 exchanges that Mr. Skiermont is focused 4 on -- how much was the design changing, in terms of the 5 gripping mechanism or the basics of the product? 6 A. 7 much at all. And in the last month or so leading up to that -- so During that time frame, I don't believe it was changing 8 MR. SERNEL: No further questions, your Honor. 9 MR. SKIERMONT: Nothing further, your Honor. 10 11 THE COURT: The witness may step down. (Witness excused.) 12 13 THE COURT: I think you have another video, correct? 14 MS. TINKHAM: That's correct, your Honor. 15 THE COURT: Go ahead with that. 16 MS. TINKHAM. LoggerHead calls Mr. Peng Li. He is 17 a current employee at Apex. He is the vice president of 18 engineering and program management. His video is about 19 15 minutes. 20 THE COURT: All right. 21 After this video, we will take a break. 22 (Excerpt of videotaped deposition of Peng Li was played 23 in open court.) 24 25 MS. TINKHAM: Your Honor, we just have one last video. It's only six minutes long. 1529 1 2 THE COURT: I am going to have you hang on for six minutes. That concludes the plaintiff's willfulness case. 3 Then we will take a relatively short lunch break, 4 because I know it's a Friday afternoon. You people want to 5 get back to deliberating. 6 We do have some testimony from the defendants. 7 Their estimate -- by the way, they have been careful about 8 this -- they think they are going to be calling Mr. Owen for 9 about an hour and then Mr. Pope, a video for 14 minutes. 10 Then we will hear closings again. They won't be as 11 long as yesterday's, obviously. So we have a little more 12 ground to cover. But I want to get this case to you as 13 quickly as possible. 14 15 So let's go ahead with the last six minutes, and then we will take a short lunch break. 16 MS. TINKHAM: Plaintiff LoggerHead's final witness 17 is Ms. Jill Lowe. She is a current employee at Apex. She is 18 the vice president of national retail. 19 (Excerpt of videotaped deposition of Jill Lowe was 20 played in open court.) 21 22 THE COURT: All right. That concludes the plaintiff's case on willfulness. 23 Ladies and gentlemen, we are going to take a short 24 recess, because I want to get the case to you as quickly as 25 we can. 1530 1 Why don't we get back here at about five minutes 2 before 1:00. You just have half an hour. I know that's not 3 a lot of time. 4 (Jury out at 12:22 p.m.) 5 6 MR. SKIERMONT: Your Honor, could we just read some admitted exhibits on the record? 7 THE COURT: Sure. 8 MS. TINKHAM: LoggerHead moves to admit the 9 following exhibits: 10 From Mr. Arvia's video deposition, PX 455. 11 From Mr. Li's video deposition, PX 64, 97, 113, 12 161, 169, 356, and 504. 13 14 THE COURT: Any objection to the admission of those materials? 15 MR. BLOCK: We will confirm our list. 16 THE COURT: That's fine. Okay. 17 MS. TINKHAM: Excuse me, your Honor. Just two 18 more. 19 20 21 22 From Ms. Lowe's deposition, PX 357, 358, 503, and 505. And then from Mr. Reese's, PX 30, PX 429, PX 467, PX 470, PX502. 23 THE COURT: Counsel, if you can, confirm that. 24 MR. BLOCK: Certainly. 25 THE COURT: All right. 1531 1 MR. SERNEL: Your Honor, if I could just read a 2 quick JMOL into the record? 3 THE COURT: Sure. 4 MR. SERNEL: So defendants move for judgment as a 5 matter of law with respect to the allegation of willful 6 infringement. 7 We just heard LoggerHead's theory that somehow the 8 defendants did not -- and Apex in particular -- did not rely 9 on a final opinion regarding the product. The evidence, I 10 think, showed that there was constant consultation with a 11 patent attorney from the beginning of the process through the 12 end of the process, clearing the product before it was ever 13 sold or shipped to Sears. 14 There is no question that Apex relied upon 15 Mr. Owen's analysis and opinions in designing the product. 16 They passed that information on to Sears, who relied on 17 Apex's due diligence in that respect. 18 I think this is a textbook case of a company's 19 doing it the right way. So I don't think there is any 20 willful infringement here. 21 The halo standard that we know applies requires 22 egregious conduct; willful, malicious infringement intending 23 to infringe. There is not a shred of evidence that that's 24 what occurred here. I think that's why Judge Darrah granted 25 summary judgment on the issue. That ruling still stands 1532 1 2 today. We believe that, now that you have heard all the 3 evidence that plaintiffs have on this issue, you should grant 4 JMOL right now, at the close of plaintiff's evidence, because 5 no reasonable juror could find willful infringement in these 6 circumstances. 7 8 9 THE COURT: You know, I do think the defendants have a good case on willfulness. I know that the plaintiff is going to -- I believe 10 plaintiffs will argue that, whatever their lawyers may have 11 told them, defendant went out on their own anyway and did 12 other things. I think that's going to be the argument. I 13 need to consider that, and I will consider it. 14 Again, I know -- I am very aware of Judge Darrah's 15 rulings. Let me be clear that I am really not so much, at 16 this point, throwing that out by proceeding here as much as 17 recognizing that if I adhere to his ruling, either simply 18 adhere to it or grant this motion now or grant a similar 19 motion at the conclusion of all your case or if -- no matter 20 what the jury does, come out differently, all those things 21 could happen. Those things could all happen. 22 One of the reasons I think it makes sense for us to 23 proceed now, however, is, there is always the chance the 24 Court of Appeals will see things differently. I think the 25 safer course generally is to have a full record. 1533 1 So if the Court of Appeals says the district court 2 was wrong. It was appropriate for that to go to a jury. The 3 jury was properly instructed. Here is what the jury decided, 4 and they want to leave that in place, then fine. 5 I am just telling you all these things, because I 6 don't want anybody here to think, well, either, A, that I 7 have got my mind made up in any direction, or that anyone 8 should feel 100 percent comfortable about this situation. 9 I continue to believe this is a case that really 10 should settle. I wish your clients would be talking about 11 that with you and with one another. 12 13 14 But right now, we are going to press forward. I will see you in about a half an hour. Let me tell you why I am rushing them so much. I 15 have to leave here middle of the afternoon. I have got 16 another judge standing by to take the verdict. I will 17 certainly be here until all the evidence is in. I won't 18 leave until the record is complete. But if I need to leave 19 before the verdict, there will be at least two other judges 20 standing by to take the verdict. 21 MR. SKIERMONT: Thank you, your Honor. 22 THE COURT: Thanks. 23 24 25 (A luncheon recess was taken at 12:27 p.m.)F/j

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